Our Services For US Companies

Are you a U.S. company doing business in the global marketplace?

Could you be paying thousands of dollars in annuity fees for patents in countries that are no longer strategically necessary? Do your in-house IP professionals have time to stay abreast of changes to patent and trademark laws in every country in which you sell products? Is your current IP counsel leveraging relationships with international counsel to your benefit? We understand that international IP protection represents a significant investment and we know how to help you manage, leverage and augment the value of your global IP portfolio. Our international IP services for U.S. companies include:

  • General counsel on international patent and trademark filing and strategy. Our expertise includes utilizing the Patent Cooperation Treaty (PCT), Patent Prosecution Highway (PPH) and Madrid Protocol.
  • IP portfolio management.
  • Advice on enforcement.
  • International strategy review and restructuring. With changes in international practice, developments in the PCT, the explosion of PPH, and the unfolding impact of the AIA, maintaining a filing strategy status quo may no longer be in your best interest. We can undertake a review of your international filing strategy and ensure a fresh, effective approach.
  • Country studies and reports. Detailed, country-specific IP data and advice can make all the difference when entering new markets or expanding existing opportunities.
  • Bridging relationships with non-U.S. patent offices and attorneys.
  • Comparative analysis and opinions. Sometimes tight budgets require difficult decisions. Our analyses can help you make difficult decisions with confidence.
  • Assistance with challenging cases/countries.
  • International trademark watch.
  • Training for in-house professionals. We can tailor educational programs to address the specific problems your in-house professionals are working on today.
  • Periodic updates/education with respect to practice in other countries.

For the benefit of our U.S. and international clients, we maintain a selectively chosen network of associate law firms around the globe. These partners are chosen based on:

  • Knowledge of the law and specific technologies
  • Client service, responsiveness and efficiency
  • Ability to offer our clients’ competitive fee structures

Patent Cooperation Treaty (PCT)

The PCT makes international patenting accessible to companies of all sizes by enabling them to apply for patent rights in any number of PCT member countries (there are now 143) by filing a single international application. Our attorneys have filed thousands of PCT applications over the years and we have the luxury of tapping the expertise of one of the foremost authorities on the international patent system, Jay Erstling. Jay served as the Director of the Office of the PCT from 2002 to 2007. With WIPO, he oversaw the worldwide administration of the PCT system and had responsibility for the development of PCT policies, including large-scale regulatory reform. To discuss your company’s PCT strategy or to schedule a training session for your in-house professionals, contact Jay at 612-361-0309 or by email.

Contact us to discuss your needs or to learn about our international practice and International IP risk management services.